IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

QUANTUM LOYALTY SYSTEMS, INC., :and QUANTUM CORPORATION OF :NEW YORK, INC., :

:Plaintiffs, :

:v. : Civil Action No. 09-022-SLR/MPT

:TPG REWARDS, INC., :

:Defendant. :

:

MEMORANDUM ORDER

I. INTRODUCTION

On January 12, 2009, Quantum Loyalty Systems, Inc. and Quantum Corporation

of New York, Inc. (collectively, “Quantum”) filed this action against TPG Rewards, Inc.

(“TPG”) alleging infringement of U.S. Patent No. 7,337,949 (“the ‘949 patent”), entitled

“System for Marketing Leisure Activity Services through Prepaid Tickets.”1 Specifically,

Quantum alleges that TPG’s “Movie Cash” debit card product and “e-Movie Cash”

product infringes the ‘949 patent.2 TPG filed an answer and counterclaims to

Quantum’s second amended complaint on September 8, 2011.3 Quantum filed its

answer to TPG’s counterclaims on October 3, 2011.4 During a teleconference on

October 20, 2011, the court advised the parties that the damages and willfulness phase

1 D.I. 1. Quantum’s complaint was twice amended. D.I. 32 (Apr. 17, 2009), D.I. 144 (Aug. 22,2011).

2 D.I. 144 at ¶ 27.3 D.I. 146.4 D.I. 155.

of this case would be bifurcated and considered after the liability phase was completed

in this court and any subsequent appeals were ruled on by the United States Court of

Appeals for the Federal Circuit.5 During that teleconference, Quantum requested the

court likewise bifurcate consideration of certain of TPG’s counterclaims (or sever or

transfer certain counterclaims) from the court’s consideration of liability for infringement

of the ‘949 patent.6 The parties submitted written arguments in support of their

respective positions on Quantum’s request.7 This order sets forth the court’s

conclusions with regard to that request.

II. LEGAL STANDARD

A district court has broad discretion to order separate trials of discrete issues or

claims if the court finds “bifurcation would be in the furtherance of convenience or to

avoid prejudice, or when separate trials will be conducive to expedition and economy.”8

The decision is made on a case-by-case basis and subject to the informed discretion of

the trial judge in each instance.9 “In deciding whether one trial or separate trials will

best serve the convenience of the parties and the court, avoid prejudice, and minimize

expense and delay, the major consideration is directed toward the choice most likely to

result in a just final disposition of the litigation.”10 In patent cases, bifurcation can be

used to simplify the issues and to “maintain manageability of the volume and complexity

5 Oct. 20, 2011 Tr. at 5-7.6 Id. at 9-19.7 D.I. 160 (Quantum); D.I. 163 (TPG).8 Federal Rule of Civil Procedure 42(b).9 See Lis v. Robert Packer Hosp., 579 F.2d 819, 824 (3d Cir. 1978).10 In Re Innotron Diagnostics, 800 F.2d 1077, 1084 (Fed. Cir. 1986).

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of the evidence presented to a jury.”11 While Rule 42(b) suggests that bifurcation can

be conducive to judicial expedition and economy, dividing the ultimate resolution of a

dispute into separate trials could inevitably lead to additional discovery, more pre-trial

disputes, empaneling a second jury, deposing or recalling the same witnesses and the

potential for multiple, additional post-trial motions and appeals.12 Those probable

consequences must be weighed and therefore, “bifurcation should be particularly

compelling and prevail only in exceptional cases.”13

III. DISCUSSION

TPG raises eleven counterclaims against Quantum:

Count I: Declaration of Invalidity, Unenforceability, andNoninfringement of U.S. Patent No. 7,337,949;

Count II: Declaration of Invalidity and Noninfringement of U.S.Patent No. 7,156,294 (“the ‘294 patent”);

Count III: Declaration of Invalidity and Noninfringement of U.S.Patent No. 7,066,383 (“the ‘383 patent);

Count IV: Attempted Monopolization;

Count V: False Advertising under Section 43(a) of the LanhamAct;

Count VI: Deceptive Trade Practices under Delaware Law;

Count VII: Tortious Interference with Prospective BusinessRelations;

Count VIII: Breach of Settlement Agreement;

11 Thomas L. Creel & Robert P. Taylor, Bifurcation, Trifurcation, Opinions of Counsel, Privilegeand Prejudice, 424 PLI/Pat 823, 826 (1995).

12 See Kos Pharmaceuticals, Inc. v. Barr Labs., 218 F.R.D. 387, 390 (S.D.N.Y. 2003).13 Id.

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Count IX: Cybersquatting under the AnticybersquattingConsumer Protection Act (15 U.S.C. § 1125(d)(1));

Count X: False Designation of Origin under the Lanham Act (15U.S.C. § 1125(a)); and

Count XI: Delaware Common Law Unfair Competition.14

Quantum requests the court sever, dismiss, bifurcate, or transfer TPG’s Counts

II-XI that are purportedly “unrelated to the core factual and legal issues surrounding

Quantum’s claim of infringement [of the ‘949 patent].”15 “Because there is no logical

relationship between these counterclaims and the patent issues, severing or transferring

the unrelated counterclaims would allow the parties to focus on the patent case, to

promptly resolve or settle that dispute, which would in turn likely lead to settlement of all

issues.”16

TPG responds “[n]one of [Quantum’s] requested actions is appropriate in this

case because the counterclaims are not dependent upon the outcome of the patent

claim, and the issues for all of the claims, defenses and counterclaims are substantially

intertwined.”17 TPG contends the “issues of damages and willfulness are bifurcated

because those issues are wholly dependent upon a finding of liability. The same is not

true for TPG’s counterclaims II through XI. Those claims will be litigated regardless of

TPG’s patent infringement liability.”18 Moreover, TPG maintains that severance,

resulting in “having separate discovery or holding separate trials on [its] counterclaims[,]

14 D.I. 146.15 D.I. 160 at 1.16 Id.17 D.I. 163 at 1.18 Id. (emphasis in original).

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would be extremely inefficient and repetitive, and severely prejudicial to TPG . . . .”19

This is true because “TPG’s counterclaims and affirmative defenses involve many

issues which are identical to or intertwined with the issues to be tried for the ‘949 patent

claim.”20 TPG reasons that efficiency and fairness would be thwarted where severance

would “require witnesses to be deposed twice or to testify at two trials about the same

facts relating to Quantum’s patent claim and TPG’s defenses and counterclaims.”21

Consequently, TPG urges the court to reject Quantum’s bifurcation and/or severance

request.

Counts II and III request a declaration of invalidity and noninfringement of

Quantum’s ‘294 and ‘383 patents. Quantum argues these counts should be bifurcated

for purposes of discovery and trial, and not heard until the damages phase of this case

or severed from this case entirely.22 In support of that argument, Quantum states it

never asserted those patents against TPG and, because it “never communicated any

threat of suit to TPG based on the patents . . . there is no Article III case or controversy

between the parties as to these patents and, no basis for declaratory judgment

jurisdiction.”23 It also contends the claims of the ‘294 and ‘383 patents are different that

those of the patent-in-suit and the underlying factual issues are completely different.

For instance, Quantum states the claims of the ‘294 and ‘383 patents require that the

user access a telephone system or “adjusting price of the ticket,” requirements not

19 Id. at 2.20 Id.21 Id.22 D.I. 160 at 4.23 Id. (citing Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 379, 382 (1884); Fed.

R. Civ. P. 12(a)(3) (“If the court determines at any time that it lacks subject-matter jurisdiction, the courtmust dismiss the action.”)).

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present in the claims of the ‘949 patent.24

TPG first notes that the “Supreme Court has unequivocally rejected the notion

that a ‘threat of litigation’ is required before a party can seek a declaratory judgment.”25

It also points out that the ‘383, ‘294, and ‘949 patents each contain substantially

identical written descriptions,26 including each having the same title, and that Quantum

marks its debit code product, “Hollywood Movie Money” with the patent numbers of all

three of those patents. Quantum’s Hollywood Movie Money competes with TPG’s

accused e-Movie Cash product. Finally, TPG maintains “the claims of the ‘294 patent

are central to TPG’s Fourth Affirmative Defense of obviousness-type double patenting,

which will require the Court to construe the claims of the ‘294 patent.”27

Considering the totality of the circumstances, the court agrees with TPG that an

Article III controversy exits with regard to TPG’s declaratory judgment counterclaims,

Counts II and III, concerning the ‘383 and ‘294 patents.28

24 Id.25 D.I. 163 at 2 (citing MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 770-77 (2007); Cat

Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 879-80 (Fed. Cir. 2008) (“In MedImmune, the SupremeCourt rejected the first prong of our declaratory judgment standard, concluding that the ‘reasonableapprehension of suit test’ was unduly restrictive. The Court explained that whether a declaratory judgmentaction contains an Article III controversy must be determined based on ‘all the circumstances,’ not merelyon whether the declaratory judgment plaintiff is under a reasonable apprehension of suit.”)) (footnote andcitations omitted).

26 The ‘294 patent issued from a continuation of the application resulting in the ‘383 patent. The‘949 patent issued from a continuation of the application resulting in the ‘294 patent.

27 D.I. 163 at 2; D.I. 146 (Fourth Affirmative Defense) (“The claims of the ‘949 Patent are invalidunder the doctrine of nonstatutory obviousness-type double patenting because the scope of the claims ofthe ‘949 Patent and claims of [the ‘294 Patent], of which the ‘949 Patent is a continuation, are nearlyidentical, and are not patentably distinct.”).

28 See, e.g., Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1159 (Fed. Cir. 2006) (Thecourt determined, under the prior, more restrictive, “reasonable apprehension of suit” standard, that anArticle III controversy was present with regard to two patents where patent owner had previously sued theparty seeking a declaratory judgment on a third patent and “the patents all describe a similar technologyand share a common specification.” There, “by suing earlier for the same technology as is now coveredby the patents in suit, the patent holder has engaged in a course of conduct that shows a willingness toprotect that technology and has created a reasonable apprehension of suit.”) (citations, internal quotationmarks, and alterations omitted).

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Quantum argues TPG’s attempted monopolization counterclaim, Count IV,

requires “numerous factual inquiries that are entirely unrelated to Quantum’s patent

infringement claim.”29 Quantum contends such issues include: the relevant product and

geographic markets at issue; TPG’s, Quantum’s, and any other competitors’ market

share in those markets; and whether barriers to entry exist, and the substantiality

thereof, in the relevant market.30 Quantum also maintains that “TPG incorporates its

allegations of false comparative advertising, disseminating false and misleading press

releases, trademark infringement, and cybersquatting into its antitrust allegations.”31

Quantum concludes that, in light of the court’s bifurcation of the liability and damages

phases of its infringement case, the court should not permit TPG’s antitrust claims to

proceed at this time because “much of the anticipated antitrust discovery will focus on

damages and other economic factors and involve discovery matter unrelated to the

patent case.”32 It requests the antitrust claims be bifurcated for the purposes of

discovery and trial, and not be heard until the damages phase of this case or severed

from this case entirely.33

TPG contends the antitrust counterclaim is based, in part, on the invalidity and

unenforceability of ‘949 patent, which are two of TPG’s affirmative defenses to

Quantum’s infringement claim, making severance inappropriate.34 TPG argues that

29 D.I. 160 at 3.30 Id.31 Id.32 Id.33 Id.34 D.I. 163 at 3. TPG indicates that “[a]t least the following facts plead in TPG’s counterclaims

(D.I. 146) will be presented at trial of Count IV and Count I: ¶¶ 19-46, 54-55, 58, 66-90, 125-26, 132-37,and 162-65.” Id. at 3 n.3.

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because this case does not involve complex technology, multiple patents, and complex

antitrust claims, bifurcation of the antitrust claims from Quantum’s infringement claim is

not necessary to prevent jury confusion.35

In Synopsys, Inc. v. Magma Design Automation, a case filed in this court, the

plaintiff alleged three counts of patent infringement which, according to the defendant,

related to extremely complex software technology.36 The defendant’s answer asserted

seven counterclaims, including claims of monopolization and attempted monopolization,

both in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2.37 The plaintiff then filed

a motion to bifurcate and stay those antitrust claims from the infringement claims.38 The

court denied the motion finding that bifurcation was neither necessary to avoid jury

confusion nor would it serve the interest of efficiency.39 Even though the technology

was purportedly complex, the court’s experience with jurors in this district was such that

those jurors were “quite adept at comprehending and adhering to the instructions they

are given, even in the most complex factual and legal scenarios.”40 Additionally, the

court was confident in the ability of the experienced counsel representing the parties to

“craft cogent presentations to aid the jury in this process.”41 The court also found

bifurcation would not serve the interests of efficiency, noting the antitrust claims were

“based in part on the allegation that [the plaintiff] fraudulently-obtained two of its patents

and asserted them against [the defendant] in violation of Section 2 of the Sherman Act.

35 Id. at 3.36 No. CIV A 05-701 (GMS), 2006 WL 1452803, at *1 (D. Del. May 25, 2006).37 Id.38 Id. at *4.39 Id.40 Id.41 Id.

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[The plaintiff’s] alleged fraud is also a centerpiece of [the defendant’s] invalidity

claims.”42 Bifurcation, therefore, would likely result in the evidentiary presentation in one

case being substantially duplicative of the evidentiary presentation in the other case. “In

addition, bifurcation would likely create further duplication of evidence because both

juries would need to be educated in the same relevant technology.”43

Here, the court does not view the technology at issue as particularly complex and

is unlikely to be confusing to a jury. The jury in Synopsys would have had to consider

the same antitrust issues, e.g., relevant markets, market shares, barriers to entry, etc.,

that a jury in this case would consider. Like the defendant in Synopsis, the invalidity

and unenforceability of the ‘949 patent is, in part, the basis of TPG’s antitrust claims,44

as well as, two of its affirmative defenses to Quantum’s infringement claim. Therefore,

bifurcation here, as in Synopsys, would likely result in substantial duplication of

evidence, and the presentation thereof, in two separate cases. Consequently, the court

concludes neither jury confusion nor efficiency weigh in favor of bifurcating the Count IV

antitrust claim from Quantum’s infringement claim.

Counts V-VII and XI assert various unfair competition and false statement claims.

Quantum contends the bulk of these counterclaims “focuses on a litany of perceived

slights and wrongs by Quantum against TPG . . . spanning decades and involving

actions and products having nothing to do with the ‘949 patent or the accused

42 Id.43 Id.44 D.I. 146 at ¶ 163 (“Quantum has demonstrated its intent to monopolize the relevant market by,

inter alia, its bad faith assertion of a patent which, on information and belief, it knows to be invalid and/orunenforceable, against TPG, and its use of this litigation to solicit business from TPG’s customers withfalse and misleading statements about TPG.”).

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product.”45 Quantum concludes these claims “are an attempt to relitigate issues already

litigated and to resolve decades-old slights that will only serve to slow down the patent

litigation” and requests these claims be bifurcated for the purposes of discovery and trial

or severed from this case entirely.46

As noted by Quantum in its arguments concerning Count IV, TPG incorporates

allegations of false comparative advertising, disseminating false and misleading press

releases, and trademark infringement into its antitrust allegations and the court has

already determined that the antitrust claim will not be bifurcated. First, TPG disagrees

with Quantum’s characterization of these claims as merely related to decades-old

actions, asserting the alleged wrongs by Quantum have occurred in the last several

years.47 TPG asserts these claims are “directly tied to the ‘949 patent infringement

claim, and contain factual issues that are common thereto.”48 TPG states that “[o]ne

example of a common factual issue is whether Quantum conducted a pre-filing

investigation.”49 TPG contends that inquiry is relevant “both to TPG’s defense to the

infringement claim, and to Counts V-VII and XI of TPG’s counterclaims, which will

require the jury to decide if Quantum had any basis for making the statements which

were made in [a February 2009] press release.”50

More persuasive, however, is TPG’s representation that Counts V-VII and XI (as

45 D.I. 160 at 2-3.46 Id. at 3, 4.47 D.I. 163 at 4 n.5.48 Id. at 3.49 Id. at 450 Id. TPG states “[a]t least following facts pled in TPG’s counterclaims (D.I. 146) involve the

subject matter of both (a) ‘949 patent issues and (2) at least one of Counts V-VII or IX-XI: ¶¶ 19-46, 54-55, 58, 66-90, 125-26, 132-37, 163, 169-70, 177-79, 184-84, 211.” Id. at 4 n.6.

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well as Counts II-III) (collectively, the “New York Claims”) were asserted against

Quantum in a previous action brought in the United States District Court for the

Southern District of New York (TPG Rewards, Inc. v. Quantum Loyalty Sys., Inc., Civil

Action No. 09-cv-00562 (DLC) (S.D.N.Y.)). According to TPG, “Quantum has argued in

the New York patent action . . . that all of these claims, which were originally asserted

in the New York action, are related to the ‘949 patent claim.”51 TPG avers that

“Quantum argued before Judge Cote that the New York Claims should be stayed and

discovery should not proceed in New York because it would be duplicative of discovery

which would be done in this action. Quantum further argued for dismissal of the New

York action based upon the first filed rule.”52 TPG maintains it would be severely

prejudiced if “this Court severs or bifurcates the New York Claims on the basis that they

are not related to the ‘949 patent claim, after those claims had already been stayed for

years because the New York Court and Quantum believed they were indeed related to

the ‘949 patent claim.”53 The court agrees based on TPG’s representations of

Quantum’s position with regard to TPG’s unfair competition and false statement claims

in the New York action. Quantum cannot have it both ways, staying TPG’s claims in the

New York action based on the argument they were related to the ‘949 patent action and

staying, or bifurcating, the same or similar claims in this action by arguing the opposite

here. Moreover, TPG has represented to the court overlap of facts pled concerning the

‘949 patent issues and Counts V-VII and XI. Consequently, the court denies Quantum’s

51 Id. at 4 (emphasis in original).52 Id.53 Id.

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request to bifurcate or sever those counts from this case.

TPG’s Counts VIII, IX, and X allege Breach of Settlement Agreement,

Cybersquatting in violation of 15 U.S.C. § 1125(d)(1), and False Designation under the

Lanham Act in violation of 15 U.S.C. § 1125(a), respectively. In 2010, TPG filed

another suit against Quantum in the Southern District of New York alleging various

claims of cybersquatting and related trademark infringement matters (TPG Rewards,

Inc. v. Quantum Loyalty Sys., Inc., Civil Action No. 10-cv-07994 (DLC) (S.D.N.Y.)).54

According to Quantum, the parties settled the matter after mediation through a

“Compromise Settlement Agreement.” “As part of that settlement agreement, all of

TPG’s cybersquatting claims were released and pursuant to the final judgment [(“the NY

Judgment”)], its claims dismissed with prejudice.”55 Through the Compromise

Settlement Agreement, “[t]he parties agreed that any subsequent action relating to the

settlement judgment could only be litigated in New York, whereas the issue relating to

the settlement agreement could be litigated in New York, Delaware or California.”56

Quantum notes TPG references the settlement judgment in its pleadings.57 Quantum

argues, therefore, litigation of that matter must be brought in New York.

Quantum states that TPG, however, “seeks to litigate the settlement agreement

issue here and seeks to bring again cybersquatting claims.”58 Quantum contends

“those cybersquatting claims have already been released (and/or dismissed with

54 D.I. 160 at 3; D.I. 146 at ¶ 112.55 D.I. 160 at 3.56 Id. (emphasis added).57 Id. (citing D.I. 146 at ¶ 115 (“Pursuant to the Compromise Settlement Agreement and a Final

Order and Judgment On Consent in the Cybersquatting Action, [Quantum] transferred ownership ofwww.tpgrewards.ca to TPG.”)).

58 Id. at 4.

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prejudice) and any litigation will necessarily entail interpretation of the New York

judgment. Those issues must be handled in New York.”59 Additionally, Quantum

argues the “cybersquatting allegations have nothing whatsoever to do with the patent

allegations . . . [and] are just another example of TPG’s filing unrelated claims to distract

from the patent cases” and requests those claims be bifurcated or transferred.60

TPG contends its Breach of Settlement Agreement counterclaim, Count VIII, is

rightfully asserted in this action and that there is no basis for a transfer of venue. It also

contends that “Count VIII alleges a breach by Quantum’s use and non-disclosure of a

domain name, which contains factual issues in common with other counts (Counts IV,

IX, X, XI), which, for the reasons cited [in connection with the unfair competition claims],

should not be severed or bifurcated.”61

The NY Judgment recites that TPG sued Quantum alleging it “registered the

domain name, www.tpgrewards.ca, with the bad faith intent to profit from the goodwill of

TPG in violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C.

¶ 1125(d)(1), Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), and New York unfair

competition law” and “[t]he parties having entered into a separate Settlement

Agreement to settle the controversy between them; it is hereby ORDERED,

ADJUDGED AND DECREED that: . . . ”62

7. The exclusive jurisdiction of this Court is retained for the purpose ofmaking any further orders necessary or proper for the construction ormodification of this Final Judgment, the enforcement thereof and the

59 Id.60 Id.61 D.I. 163 at 3.62 TPG Rewards, Civil Action No. 10-cv-07994 (DLC) (S.D.N.Y.) (D.I. 15 at 1-2) (emphasis

added).

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punishment of any violations thereof. Any motion or proceedings underthis paragraph shall be venued in the United States District Court for theSouthern District of New York, and the parties consent to this Court’svenue and personal jurisdiction for any such motion or proceeding underthis paragraph.

8. This Final Order and Judgment on Consent shall be binding on theparties, and their subsidiaries, affiliates, successors and assigns.

9. All defenses and Counterclaims, and all rights to appeal, are herebywaived.

10. This Final Judgment shall be deemed to have been served upon theparties at the time of its execution by the Court.

11. The action is dismissed with prejudice.

Here, TPG brings similar claims for violation of the Anticybersquatting Consumer

Protection Act, 15 U.S.C. ¶ 1125(d)(1) (Count IX) and Section 43(a) of the Lanham Act,

15 U.S.C. § 1125(a) (Count X). The basis of these claims, however, is Quantum’s

registration and use of the domain name www.emoviecash.us (“the Second Infringing

Domain Name”), not the domain name www.tpgrewards.ca that was the subject of its

claims in the New York action.63 Therefore, TPG’s current claims, based on the Second

Infringing Domain Name, have not been “released (and/or dismissed with prejudice),” as

63 D.I. 146 (Count IX) at ¶¶ 195-199, 202 (“Quantum has registered, trafficked in and/or used thedomain name www.emoviecash.us (‘the Second Infringing Domain Name’). The Second InfringingDomain Name is identical or confusingly similar to TPG’s e-MOVIE CASH mark. Quantum adopted theSecond Infringing Domain Name with a bad faith intent to profit from TPG’s e-MOVIE CASH mark. Quantum’s use of the Second Infringing Domain Name has caused irreparable harm to TPG’s goodwilland reputation. . . . Quantum’s activities as alleged herein violate the federal AnticybersquattingConsumer Protection Act, 15 U.S.C. § 1125(d)(1).”); id. (Count X) at ¶ 207 (“By reason of the foregoingacts of cybersquatting, Quantum’s unlawful conduct constitutes the willful use in interstate commerce offalse designations of origin or false or misleading descriptions or representations of fact which are likely tocause confusion, mistake or deception, in that it falsely designates Quantum’s goods and services asoriginating from, being sponsored or endorsed by, and/or being affiliated with TPG, all in violation of 15U.S.C. § 1125(a).”).

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Quantum asserts.64

TPG’s Breach of Settlement Agreement claim (Count VIII) is also based on the

Second Infringing Domain Name. In the Compromise Settlement Agreement:

Quantum warranted and represented that the only domain name it ownedor controlled which includes any Federally Registered Trademark of TPGwas www.tpgrewards.ca. In the Agreement, Quantum did not disclosethat it also owned the domain name, www.emoviecash.us, which includesanother Federally Registered Trademark owned by TPG. As a result,Quantum’s warranty and representation was false in a material respect.65

Quantum acknowledges issues related to the Comprise Settlement Agreement

could be litigated in Delaware. Therefore, the court find no basis to transfer either

Count VIII, or related Counts IX and X (based on a different domain name than was the

subject of the New York litigation), to the Southern District of New York nor to bifurcate

those counts from the infringement action.

IV. CONCLUSION

For the reasons stated above, it is hereby ORDERED, ADJUDGED AND

DECREED that Quantum’s request to sever, dismiss, bifurcate, or transfer TPG’s

counterclaims, Counts II-XI, is DENIED.

December 22, 2011 /s/ Mary Pat Thynge Wilmington, Delaware Thynge, U.S. Magistrate Judge

64 At the time it commenced its action against Quantum in New York, TPG avers it “was unawareof Quantum’s ownership of the Second Infringing Domain Name” and it only learned Quantum hadregistered the Second Infringing Domain Name after the parties entered into the Compromise SettlementAgreement.” Id. at ¶¶ 112, 116.

65 Id. (Count VIII) at ¶ 189.

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